Breast Cancer Charity Bullying Other Charities Over Trademark

from the for-the-cure dept

Wed, Dec 8th 2010 9:20am — Mike Masnick

A few months back we had a few submissions over some claims by the "Susan G. Komen for the Cure" operation was being a trademark bully, and threatening other charities that were using the color pink. SGK is the big name in raising money for breast cancer research, but a new article highlights how it's also spending over a million dollars a year being a trademark bully: specifically going after anyone else who uses the phrase "for the cure" or "for a cure" as part of their own charitable fundraising. The organization claims that it "needs" to do this to protect its trademark, but as we've pointed out time and time again, that's simply not true. First, you could argue that raising money for charity is not "use in commerce" and thus not deserving of a trademark. On top of that, the phrase "for the cure" certainly sounds descriptive, and again perhaps doesn't deserve a trademark

But, even assuming that the trademark itself is valid, there are all sorts of ways it could deal with other charities using that phrase without acting like a legal bully. It could simply agree to license the mark at no cost to other legitimate charities. SGK's claim, of course, is that it doesn't want the phrase to get sullied by unscrupulous organizations, but that doesn't mean it needs to pull out the legal guns when a legitimate charity comes along. Just let them use the damn phrase, and let everyone help raise money for charity, rather than legal bills.

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: breast cancer, charity, for the cure, trademark
Companies: susan g. komen

55 Comments

If you liked this post, you may also be interested in...

Reader Comments

Subscribe: RSS

View by: Time | Thread

Dave (profile), 8 Dec 2010 @ 9:37am

New SGK slogan
Susan G. Komen: Replacing one type of cancer with another.
[ link to this | view in thread ]
iamtheky (profile), 8 Dec 2010 @ 9:37am

Back to back articles with opinionated endings.....previously very well-established opinions. How about a large Ascii middle finger at the end of the next one to show them how you really feel?
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 9:40am

Re:
What's wrong with Mike including his opinions?
[ link to this | view in thread ]
John Doe, 8 Dec 2010 @ 9:50am

My question about these disease charities is...
What I want to know is, when/if a cure is found by one of the disease based charities; are they going to patent the cure? If so, why since much if not all of the money was donated? Shouldn't the cure be free?
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 9:55am

Re: My question about these disease charities is...
In a world of decency and sensibility the cure would not get a patent, although it would get some form of protection to prevent an organization from patent it and abusing that patent. Most likely the cure will get patented and an exorbitant price will be charged for it "because they own the patent and can do whatever they want with it" as some people would claim
[ link to this | view in thread ]
Steve R. (profile), 8 Dec 2010 @ 9:59am

Selective Charity
What about men with prostrate cancer?
[ link to this | view in thread ]
Dark Helmet (profile), 8 Dec 2010 @ 10:02am

Re: Selective Charity
"What about men with prostrate cancer?"

Is that a form of cancer that makes you unable to genuflect at church?
[ link to this | view in thread ]
Richard (profile), 8 Dec 2010 @ 10:15am

Re: Re: Selective Charity
No - you don't lie flat on the floor in church...

However on the main topic - I certainly wouldn't donate to a charity that used legal action against other charities in this kind of case.
[ link to this | view in thread ]
Berenerd (profile), 8 Dec 2010 @ 10:18am

Re:
For god sakes(tm), you are pulling straws. God forbid(tm) Mike has an opinion on something, I mean if he had no opinion why write about it?
[ link to this | view in thread ]
Anonymous B, 8 Dec 2010 @ 10:22am

Huh?
How can you trademark a color or a common three word phrase?

Not to mention, breast cancer is not simply a woman's disease. Tens of thousands of men are diagnosed each year and they have a much higher rate of dying from it. Susan G. Komen must hate men.
[ link to this | view in thread ]
David Sanger (profile), 8 Dec 2010 @ 10:25am

Trademark license for different product??
Mike. your suggestion to "license" the trademark to other entities doesn't make sense. It would likely be considered "naked licensing" and they could lose their trademarks:

http://definitions.uslegal.com/n/naked-license/

"licensing is generally permitted provided that the mark�s owner retains the right to approve the licensee�s use of the mark and supervise any element of quality control over the same. The logic is clear: if the mark is to have the import of signifying a particular source of certain goods or services and the public is going to have the right to rely on that mark for that significance, then when the mark is licensed to a party for use other than by the mark�s owner, the mark�s owner should be in a position to approve the use of the mark in relationship to the licensee�s good or services so that the public, upon seeing the mark in regard to those goods or services provided by the licensee, may rely on the same good will and quality it has come to know in relationship to that mark. " http://j.mp/g9gwOZ

ps I am not a lawyer. But I also agree that it seems the claims appear overly broad (e.g. objecting to use of the color pink)
[ link to this | view in thread ]
interval (profile), 8 Dec 2010 @ 10:35am

Re: Trademark license for different product??
Um, shouldn't a NON-PROFIT concentrate on its mission, rather than defending a trademark against (perceived) infringement? Or to put it another way; has it been conclusively shown that suing for trademark infringement is a solid path to riches? Seems like a really, really crappy way to raise funds for solving a humanitarian problem.
[ link to this | view in thread ]
DS, 8 Dec 2010 @ 10:42am

"SGK's claim, of course, is that it doesn't want the phrase to get sullied by unscrupulous organizations"

You know, sort of like that unscrupulous organization called the "Susan G. Komen for the Cure"?
[ link to this | view in thread ]
interval (profile), 8 Dec 2010 @ 10:58am

Re: Re: My question about these disease charities is...
I don't have any numbers, but I would be surprised if many charities are directly involved in the research they fund. In my CYNICAL head I imagine the breakdown of 100% funds raised is: 75%: charity administration, 20%: Marketing, %5 actually makes its way to the effort its trying to fund. If that's even close to reality, its highly unlikely that a charity would be able to purchase ownership stakes in any disease research. I think they raise what money they can and give it to funds and grants who in turn dole out the cash to the individual research efforts. The fundraisers are highly removed from the actual efforts I suspect.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:06am

Re:
OMG! A blogger with an opinion! Writing about stuff that he has opinions about!

What is this world coming too?!?!?!?!
[ link to this | view in thread ]
Wabbit (profile), 8 Dec 2010 @ 11:08am

My wife's answer
[ link to this | view in thread ]
Wabbit (profile), 8 Dec 2010 @ 11:12am

Re: My wife's answer
Damn keyboard ... I hit return instead of tab, and a title with a blank comment posted.

Anyway, I am an IP attorney ... I showed my wife a news article about what SGK is doing, and she wrote to them that she will no longer donate to them as a charity. I said good for her!!!
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:12am

Owning color in a specific trademark
First off, I believe that pink has been around longer than the Susan G Komen foundation.

Also, I believe that T-Mobile has a trademark claim of the color combination (specifically the numbers) to Magenta. In their trademark registration, they claim RAL 4010, which (loosely) translates to CMYK 10/90/30/0, and color mark registration 395 52 630. Their trademark is based in more of a fact. They reference RAL, a German color-space system used to match the exact hue and shade of certain paints, similar to Pantone�.

So I would like to know what color combination (specifically the numbers) of the flavor of "Pink" Susan G Komen has registered because they may be in trouble. You see, Owens-Corning also has a trademark on the use of pink for insulation and I think Owens-Corning may have been around a little longer and may desire to exercise it's trademark rights against the Susan G Komen Foundation. (See: In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)

Tiffany & Co. has a claim for a certain blue color it uses for jewelry boxes (Pantone� 1837), and UPS has a trademark on brown (Pantone� 462C). Their claims remain quite specific.

But Ownens-Corning already owns "PINK"
[ link to this | view in thread ]
KevinG79, 8 Dec 2010 @ 11:16am

Ban SGK products...Support charities that actually put the $ towards...charity.
From here on out I vow to NOT purchase any products that claim to donate to SGK. "For the cure" my ass. They claim to be a charity but when they behave like this and get all bent because another charity wants to use a COLOR?! Then where the hell did my money go? Certainly NOT to fighting cancer. Screw you Susan G Komen. You know what..your shit still stinks just like the rest of us, pompous bitch.
[ link to this | view in thread ]
David Sanger (profile), 8 Dec 2010 @ 11:16am

Re: Re: Trademark license for different product??
Not always. Trademarks are there to avoid confusion for the consumer.

I am a photographer. If I set up a website called "Red Cross Health Photographs" with a large red cross logo, I would expect customers to be confused and the real Red Cross to have an excellent case against me.

That said, there is no doubt a trademark owner can be overly agressive is asserting broad rights where there may be little or no real customer confusion.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:21am

Simple Charity Rule
If the executive of the charity makes more than the average wages of those they are supposed to benefit, DO NOT GIVE.

http://www.associatedcontent.com/article/2889356/nonprofit_ceo_salaries_jobs_that_pay.html

"As of March 2009, the CEO Hala G. Moddelmog, earned a salary of $459,406."
Throw in the fact that around 1/4 of the money they raise actually goes to research.

I wish to be charitable, but I dont trust ANY charitable organizations anymore.
[ link to this | view in thread ]
David Sanger (profile), 8 Dec 2010 @ 11:22am

Re: Owning color in a specific trademark
http://tess2.uspto.gov/

Search Term: Susan G Komen
Field: Owner Name and Address
Result Must Contain: All Search Terms

295 results don't seem to include the color. but lots of phrases.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:37am

For what it's worth, that article says they spend nearly $1 million in legal fees, not in trademark-related legal fees.

Unless they are currently involved in a contentious trademark lawsuit, it is very unlikely that they spend anywhere close to $1 million a year (i.e., their entire legal budget) on trademark-related legal fees.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:40am

Re: Huh?
"How can you trademark a color or a common three word phrase?"

By using either in a manner such that people view it as an indication of affiliation with your charity.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:41am

Re: Re: Owning color in a specific trademark
Interesting. So are they actually an IP & branding company masquerading as a 503(c)(3) non-profit organization? On their website, they seem to like their "most trusted nonprofit brand names in America" awards.

http://ww5.komen.org/KomenNewsArticle.aspx?id=6442451806

They also seem to use/own a number of hues. Does their trademark (if one is registered) allow a full spectrum of hues?
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:41am

Re: Trademark license for different product??
I have pointed this out to Mike before. Not sure if he saw my comments or is just ignoring this hurdle.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:44am

Re: Re: Re: Trademark license for different product??
Exactly.

I read a case recently dealing with the American Society for the Blind (I think). They sued some guy who was teaching people how to run scams using their logo/seal.

Trademarks for charities serve a legitimate purpose and maintaining trust (i.e., if it's got our trademark on it, you can trust it) is a key goal for charities.

That said, not sure if every case cited in the article was dealt with properly.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:47am

Re: Owning color in a specific trademark
Trademark rights (a) don't depend on being the first to use the mark at all, ever, in any capacity, and (b) are limited in most cases to related goods/services.

So, Owens-Corning doesn't "own pink," nor does T-Mobile, nor does SGK. They own trademark rights w/r/t use of pink in a manner likely to cause confusion with their use.

So, if SGK starts selling pink insulation, they might have a problem.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:49am

Re: Ban SGK products...Support charities that actually put the $ towards...charity.
Wow.

What makes you think they are not using money to fight cancer?
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 11:50am

Re: Simple Charity Rule
"If the executive of the charity makes more than the average wages of those they are supposed to benefit, DO NOT GIVE."

I don't think it's realistic to be able to find a competent CEO for a global organization like the Red Cross, for example, on a typical refugee's salary.
[ link to this | view in thread ]
ChimpBush McHitlerBurton, 8 Dec 2010 @ 12:03pm

Re: Opinionized
I've got your AMF right here:

/"\
|\./|
| |
| |
|>~
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 12:14pm

Re: Re: Owning color in a specific trademark
So then please define "PINK" in terms which can be understood by all parties. They are using it in various material and media and some don't want to be served a C&D, so carve out your little slice of American IP pie.

Secondly, this article is about "for a cure" and "for the cure" is a missing a subject. Using bad grammar may be trendy in marketing circles. But it's an open-ended statement and lacks specificity. If you say "get educated for a cure to stupidity", is this an infringement or fair use?
[ link to this | view in thread ]
ChimpBush McHitlerBurton, 8 Dec 2010 @ 12:15pm

Re: Re: Re: Re: Trademark license for different product??
Unfortunately, what we can pull from the Bully's tactics is that they really are acting more like a FOR-PROFIT organization. Their willingness to spend millions of dollars that were donated to help cure cancer, on defending their desire to monopolize the breast cancer space speaks volumes as to their true motivation. They are a corporation, and they are acting like one.

They could prove us all wrong by:

1) Choosing to trademark something other than a color. That is obvious and clear abuse of trademark.

2) Choosing a phrase that is uniquely theirs as opposed to a phrase that is GUARANTEED to be used by others in the same space. I mean, please.

But that's not what they want. They want to carve out breast cancer donations for themselves, and prevent others from working in the same space, so they PURPOSELY chose to trademark those items, to position themselves as the preeminent vector for breast cancer donations.

Shameful. They are working AGAINST the very thing they claim to be for. They are really working to create a solid and long-lasting career for themselves. I can only wonder what the head honchos in that organization make for a yearly salary...

Millions?

TENS of millions?

Don't doubt it.

CBMHB
[ link to this | view in thread ]
TDR, 8 Dec 2010 @ 12:29pm

Of course, it's likely that were a cure found, big pharma would do everything it can to lock it up. Healthy people, after all, don't need to buy medicine. And I have to wonder how likely it is such a cure would ever be found. We haven't even found a cure for the common cold yet, much less many things more serious than that. Also, once a cure is found, the need for organizations like SKG whose outward purpose is to find one disappears. Their survival depends on a cure not being found.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 1:02pm

Re: Re: Simple Charity Rule
How about at your salary then? Or the average salary of the nation in which they base themselves? (Long have I thought that should be a start towards how we calculate they pay for our political class, but that is a whole other discussion)

Pick a reasonable criteria, how many charities meet it? Yes, the criteria of "refugee pay" is absurd. However I was talking about a charity here in America that deals with "typical Americans", not one concerned with refugees starving because their country values growing coffee over food, and has ethnicities they get away with not caring about.
[ link to this | view in thread ]
Someone Who Pays Attention, 8 Dec 2010 @ 1:04pm

Susan G. Komen has always only cared about the money
Susan G. Komen has only ever cared about the money. They don't even use it to promote the support groups they say they will. Instead they give the money to support abortions at Planned Parenthood, letting local chapters die instead.

If it ever says Susan G. Komen on it, I won't buy it. I'm not going to support the killing of babies--which is what is even causing breast cancer in some women.

I have family members who have died from breast cancer and luckily a couple who have survived. I support them--but not this wolf in sheep's clothing trying to make money off of their suffering.

To quote Alveda King:
�Isn�t it funny that Susan G. Komen for the Cure is raising money to find a cure for breast cancer while at the same time giving millions of dollars to an organization that performs abortions on women and provides birth control both of which have been linked to breast cancer.�
[ link to this | view in thread ]
Andrew F, 8 Dec 2010 @ 1:40pm

Re: Owning color in a specific trademark
The color is specific to the space. Pink has attained "secondary meaning" as symbolizing breast cancer. So although SKG doesn't have a claim to, say, the color pink for cellphones, it does have a claim to the color pink when used in connection to fundraising for diseases.

If someone started using pink to fund-raise for leukemia, Susan Komen probably has a decent legal case (although the public relations nightmare of the breast cancer people suing the leukemia people would be disastrous).
[ link to this | view in thread ]
Andrew F, 8 Dec 2010 @ 1:40pm

Re: Re: Owning color in a specific trademark
The relevant court case for this is Qualitex Co. v. Jacobson Products Co., Inc. btw.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 1:43pm

Re: Re: Re: Re: Re: Trademark license for different product??
You've obviously got a lot of speculating to do, so I'll leave you to that.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 1:46pm

Re: Re: Re: Owning color in a specific trademark
"So then please define "PINK" in terms which can be understood by all parties."

I don't think that's easy to do. There will always be gray areas and close cases. That's true for any trademark, whether it's a color, word, slogan, logo, etc.

"If you say "get educated for a cure to stupidity", is this an infringement or fair use?"

Probably neither. I'm not sure what being an open-ended statement or lacking specificity have to do with anything.
[ link to this | view in thread ]
Anonymous Coward, 8 Dec 2010 @ 1:49pm

Re: Re: Re: Simple Charity Rule
"Pick a reasonable criteria, how many charities meet it?"

How about whatever the charity is willing to pay and the employee is willing to accept.
[ link to this | view in thread ]
Steve R. (profile), 8 Dec 2010 @ 1:53pm

Re: Re: Selective Charity
Why support a charity that excludes men. Are men expendable?
Yes men can get breast cancer. Yes charities have a right to benefit a specific group. But lets get some equal time.
[ link to this | view in thread ]
PRMan, 8 Dec 2010 @ 2:15pm

Re: Re: Opinionized
No, you really don't...
[ link to this | view in thread ]
PRMan, 8 Dec 2010 @ 2:30pm

Re: Re: Re: My question about these disease charities is...
Here is a list of the top 10 most efficient charities as rated by Forbes.com:

http://www.forbes.com/2010/11/17/charity-10-personal-finance-philanthropy-10-most-eff icient-charities_slide.html

(Use the next button near the top of the screen.)

And here is a list of the criteria they use to determine that and some examples of good and bad organizations:

http://www.forbes.com/2010/11/16/forbes-charity-200-personal-finance-philanthropy- 200-largest-charities-charity-10-intro_2.html
[ link to this | view in thread ]
PRMan, 8 Dec 2010 @ 2:33pm

Re: Selective Charity
Many hockey players were growing a mustache in November in order to support some organization fighting prostate cancer.

I don't remember what the organization is, but they were doing it for the very reason you mention.

Actually, I believe they said that prostate cancer is now more deadly than breast cancer.
[ link to this | view in thread ]
nasch (profile), 8 Dec 2010 @ 2:57pm

Re: Re: Re: Selective Charity
So you wouldn't support a battered women shelter either?
[ link to this | view in thread ]
nasch (profile), 8 Dec 2010 @ 3:11pm

Re: Susan G. Komen has always only cared about the money
SGK says you're full of crap. :-)

http://ww5.komen.org/uploadedFiles/Content/AboutUs/MediaCenter-2/planned_parenthood_winer_201 0.pdf

So does the National Cancer Institute (regarding abortion and breast cancer):

http://www.cancer.gov/cancertopics/factsheet/risk/abortion-miscarriage

And the NCI indicates there are conflicting studies about oral contraceptives and breast cancer:

http://www.cancer.gov/cancertopics/factsheet/Risk/oral-contraceptives#2
[ link to this | view in thread ]
iamtheky (profile), 8 Dec 2010 @ 6:33pm

The opinion is always there, it is usually not however, in summation blowing a giant raspberry. My point was more about being overly obvious.

And ascii art always gets my posts filtered, well done.
[ link to this | view in thread ]
Steve R. (profile), 8 Dec 2010 @ 8:29pm

Re: Re: Re: Re: Selective Charity
By your logic, only woman deserve to be sheltered? They should be battered PERSON shelters.
[ link to this | view in thread ]
ChimpBush McHitlerBurton, 8 Dec 2010 @ 11:07pm

Re: Re: Re: Re: Re: Re: Trademark license for different product??
Weird. Douchebags usually find one small piece of my screed and show evidence of my incorrect speculation, then expand that to suggest that my entire premise is faulty.

You sir, are not the average douchebag, in that your sloth prevented you from even doing the research to disprove anything I suggested.

Congratulations?

CBMHB
[ link to this | view in thread ]
ChimpBush McHitlerBurton, 8 Dec 2010 @ 11:09pm

Re: Re: Re: Opinionized
Yeah, I really didn't... did I?

My heart was in the right place. Maybe next time.

CBMHB
[ link to this | view in thread ]
nasch (profile), 9 Dec 2010 @ 6:16am

Re: Re: Re: Re: Re: Selective Charity
I guess I'll take that as a no!
[ link to this | view in thread ]
Justin Hammack, 21 Dec 2010 @ 2:19am

A Mistake
Yeah, this news is disappointing. I think Susan G. Komen is making a mistake. They need to EMBRACE the copy-cats. It'll only make their cause stronger. There is no way that another cause will make up this sort of lost ground and usurp their actual brand identity.

Susan G. Komen is succumbing to industrial era business tactics. It just doesn't work anymore, it's short sighted on their part. Oh well.

As far as the money, that's just part of the game, whether it's this or that, charities don't always spend the money how everyone would want. (I'm sure there are people out there THRILLED the money is being spent to protect the trademark, whatever.)
[ link to this | view in thread ]
nevinscrna, 18 Jan 2011 @ 11:13am

Re: Selective Charity
The gland found in your perineum is called the prostate; note that most folks get the spelling and pronunciation wrong.

Definition of PROSTRATE

1
: stretched out with face on the ground in adoration or submission; also : lying flat
2
: completely overcome and lacking vitality, will, or power to rise
3
: trailing on the ground : procumbent
See prostrate defined for English-language learners �
[ link to this | view in thread ]
Bill Jenkins, 24 Jan 2011 @ 10:56pm

What about The Cure suing Susan G. Komen?
I distinctly remember "The Cure" being around in the 80's and one of my friends, a fan, tells me they have been together before that.

So now should they own "The Cure" brand and sue anyone who uses the term ala Monster Cable and Susan G Komen?

Susan G. Komen will only receive bad publicity for this behavior and donations will be made elsewhere.

I don't expect the silliness to stop as this issue will be in the news repeatedly and get exactly the response that Monster Cable did.

It is a standard corporate bully lawsuit because it is likely they have more money and staff attorneys unlike the people they sue.
[ link to this | view in thread ]